The Tiramisu Hero and The Tiramisu Star
This article is a contribution to the Intellectual Property Advent Calendar 2021 (thank you for the opportunity).
Does the word "Tiramisu Hero" ring a bell? It is the trademark of a tiramisu specialty shop that became a major topic of conversation when it opened in early spring 2019.
The other day, while transferring at Iidabashi Station, I saw "Tiramisu Star" and remembered it.
Why would I think of "Hero" when I see "Star"? Let me start by telling you about that.
Hero and Star
The "Tiramisu Hero" is a tiramisu specialty shop that was born in Singapore in 2012. Let's call this A.
The Tiramisu Hero Official Website
This did not cross the ocean to Japan in the spring of 2019... rather, the tiramisu specialty shop that became the topic of conversation at the beginning was opened by an unrelated third party. Let's call this B. Surprisingly, B had acquired the trademark rights for "Tiramisu Hero" in Japan.
Naturally, A was in trouble. After much difficulty, they decided to abandon the name Hero and continue as "Tiramisu Star".
Around the same time, B said they would give the usage rights of the trademark to A. Consumers raised voices of criticism, saying, "You can't just take the rights and then act like you're doing them a favor by letting them use it!" but time passed without any further major news.
In other words, Hero A from Singapore became a Star in Japan, and there was a separate Hero B in Japan. This is the connection between the Hero and the Star.
As for Hero (B)
When I asked Google-sensei what happened to Hero B after that, it seems they closed down two months and three days after opening. They seem to have decisiveness. As someone who tends to hesitate and miss opportunities to cut losses, I would like to learn from them.
As for the "Tiramisu Hero" trademark
Finally, a topic about intellectual property. I looked up the "Tiramisu Hero" trademark.
B's trademark rights have expired!
And A has acquired the trademark rights for "Tiramisu Hero"!
A bit curious.
The extinction of B's trademark rights was due to a cancellation decision and an invalidation trial decision.
Opposition and Invalidation Trial
Both the standard character trademark 'Tiramisu Hero' and the logo trademark had their cancellation decisions or invalidation trial decisions finalized on the grounds that they violated Article 4, Paragraph 1, Item 7, i.e., they were trademarks that harm public order and morals. (The standard characters were subject to an invalidation trial, and the logo was subject to an opposition and an invalidation trial.)
1. A's trademark and B's trademark (the katakana 'Tiramisu Hero' and the logo, respectively) are identical or similar and confusing.
2. Before filing, A had started sales in Japan, opened stores at department store events, and was featured in magazines and on television. Therefore, it was recognized that A's products were known to some extent in Japan.
3. B has no contractual relationship with A.
4. B used photos from A's website to run advertisements for franchise recruitment, etc. It was recognized that B did so knowing of A's products and trademarks.
5. It can be inferred that B filed the application preemptively, with an unjust purpose, and by plagiarism. This is contrary to public order and morals. ...Something like that.
The grounds for invalidation under Article 4, Paragraph 1, Item 15 and Article 19 were denied.
In the opposition against the logo trademark, B denied the well-known status of A's trademark and its own unjust purpose (see 2 and 5 above). The reason given for it not being an unjust purpose was that it was for 'defensive purposes'.
This rebuttal was not accepted, and a cancellation decision was made.
And the examination of A's application was suspended for a long time due to this opposition and invalidation trial, and it seems it was finally registered this year. Congratulations!
By the way, there was even an application like Trademark Application 2019-022003, which was a little late. It was rejected.
The Future of the Star
A has acquired the trademark rights for 'Tiramisu Hero'. In other words, the Star can also return to being a Hero.
The Tiramisu Hero Japan The Hero Japan domain is also still active.
It wouldn't be strange if they started saying they were going back to being a Hero.
It wouldn't be strange if they were in Iidabashi either.
(Although it seems they were only open there for a limited time)
That said, it has been nearly three years since they became the Star.
'The Tiramisu Star' naturally has business goodwill accumulated as well (naturally, A also holds the trademark rights for 'The Tiramisu Star'). That is also important.
It's also nice that it originated in Singapore and is called 'Star'!
When it comes to what is important, it is essential to file for trademarks that you intend to use as early as possible.
Next year marks the 10th anniversary since its birth in Singapore! Congratulations, regardless of anything else.
Thank you for reading until the end.
Author @sylacwa
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